DCT
1:17-cv-00487
Blackbird Tech LLC v. Stanley Black & Decker Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blackbird Tech LLC d/b/a Blackbird Technologies (Delaware)
- Defendant: Stanley Black & Decker, Inc. d/b/a DEWALT and PORTER-CABLE (Connecticut)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:17-cv-00487, D. Del., 04/28/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant conducts regular business in the state, including marketing, selling, and offering for sale the accused products through its own and third-party websites accessible to Delaware residents, and by placing products into the stream of commerce with the knowledge they would be sold in Delaware, including at a specific retail store location.
- Core Dispute: Plaintiff alleges that Defendant’s battery pack accessories, which add USB charging capabilities to cordless power tool batteries, infringe a patent related to rechargeable battery accessories.
- Technical Context: The technology concerns accessories that expand the functionality of proprietary, high-capacity batteries for cordless power tools, allowing them to serve as portable power sources for other electronic devices.
- Key Procedural History: The complaint was filed on April 28, 2017, just 17 days after the patent-in-suit was issued on April 11, 2017. The complaint does not mention any prior litigation, licensing history, or administrative proceedings related to the patent.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-13 | U.S. Patent No. 9,620,989 Earliest Priority Date |
| 2017-04-11 | U.S. Patent No. 9,620,989 Issues |
| 2017-04-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,620,989, "Rechargeable Battery Accessories," issued April 11, 2017.
The Invention Explained
- Problem Addressed: The patent identifies several deficiencies with conventional cordless power tool battery packs: users cannot easily determine the remaining charge, the batteries are limited to use with specific power tools, and they cannot be used to charge other common electronic devices. (’989 Patent, col. 1:29-39).
- The Patented Solution: The invention is a modular accessory that attaches to a standard power tool battery pack. This accessory contains its own interfaces, such as one or more USB ports, to allow the battery pack to charge external devices like cell phones. (’989 Patent, Abstract; col. 1:47-57). The patent describes a key feature being an "undercarriage" or a "lower port" on the battery that allows for the connection of various accessories, creating a versatile system. (’989 Patent, col. 4:40-41; col. 6:9-13).
- Technical Importance: The technology aims to increase the utility of expensive and powerful tool-specific batteries, transforming them into general-purpose portable power sources. (’989 Patent, col. 1:40-43).
Key Claims at a Glance
- The complaint asserts claims 5 and 10, which depend from independent claim 1. (’989 Patent, col. 8:24-28; col. 8:49-51; Compl. ¶10).
- Independent Claim 1 of the ’989 Patent recites the following essential elements:
- A housing comprising at least a first side with opposing first and second lateral edges.
- A first interface on the first side of the housing, which includes:
- A first mechanical interface with first and second alignment guides configured to "slidably and detachably connect the accessory to a battery pack."
- A first electrical interface to electrically connect the accessory to the battery pack.
- A second interface defined in the housing, which includes:
- A second mechanical interface to connect the accessory to a "first device."
- A second electrical interface to electrically connect the accessory to the "first device."
- The complaint reserves the right to assert additional claims. Dependent claim 5 adds a "battery power gauge," and dependent claim 10 (via claim 9) adds a "third interface" comprising a female USB port. (’989 Patent, col. 8:24-28, 8:49-51).
III. The Accused Instrumentality
Product Identification
- The DEWALT DBC090 12V/20V Max USB Power Source and the Porter-Cable PCC798B 20V Max Charging Device. (Compl. ¶10).
Functionality and Market Context
- The complaint alleges that these products are accessories that attach to DEWALT and Porter-Cable cordless power tool battery packs. (Compl. ¶11-12). Their function is to draw power from the tool battery and provide it to other devices via two on-board USB ports. (Compl. ¶11-12).
- The complaint includes a photograph of the DEWALT accessory attached to a battery pack, showing how it mates with the battery's primary tool-connection terminal. (Compl. p. 4).
- The complaint also provides a photograph of the Porter-Cable accessory, which shows a similar design for connecting to its compatible battery packs. (Compl. p. 5).
- The products are alleged to be commercially significant, as they are sold through the Defendant's brand websites as well as major national retailers like Amazon.com and Home Depot. (Compl. ¶6).
IV. Analysis of Infringement Allegations
’989 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A cordless power tool battery pack accessory comprising: a housing comprising at least a first side having a first lateral edge and a second lateral edge opposite the first lateral edge; | The accused accessories have a plastic body ("housing") with an underside ("first side") that has first and second opposing lateral edges. | ¶11, ¶12 | col. 8:1-4 |
| a first interface defined on the first side of the housing comprising: a first mechanical interface comprising a first alignment guide defined along the first lateral edge and a second alignment guide defined along the second lateral edge... | The accused accessories include a "first interface" on their underside, which has a "first mechanical interface" with "first and second alignment guides defined along the lateral edges (the guide members on the longer sides of the underside)." | ¶11, ¶12 | col. 8:5-9 |
| ...the first and second alignment guides being configured to slidably and detachably connect the accessory to a battery pack configured to slidably and detachably connect to a cordless power tool; | The alignment guides are alleged to be configured to "slidably and detachably connect" the accessory "to a cordless power tool battery pack." | ¶11, ¶12 | col. 8:9-13 |
| and a first electrical interface comprising an electrical connection configured to electrically connect the accessory to the battery pack; | The "first interface" on the accused accessories is alleged to include a "first electrical interface (metal contacts on the underside)." | ¶11, ¶12 | col. 8:14-17 |
| and a second interface defined in the housing comprising: a second mechanical interface configured to mechanically and detachably connect the accessory to a first device; and a second electrical interface... configured to electrically connect the accessory... | The complaint alleges the accused products include "second and third interfaces, each having mechanical and electrical interfaces (the two USB ports) configured to electrically connect the accessory to devices (e.g., USB-power devices like mobile phones)." These appear to map to the claimed second and third interfaces. | ¶11, ¶12 | col. 8:18-23 |
- Identified Points of Contention:
- Structural Questions: The complaint alleges the accused products' connection mechanism, which appears to be the standard slide-on rail system used to connect to a power tool, meets the "first mechanical interface" limitation. A central question may be whether this standard battery-tool interface is structurally equivalent to the "first and second alignment guides" as described and claimed in the patent.
- Scope Questions: The patent specification repeatedly discusses a novel "undercarriage" or "belly" interface that is distinct from the primary top-mounted tool connection point (’989 Patent, col. 5:39-41, 5:62-64). The accused products, as depicted in the complaint's own visual evidence (Compl. p. 4), appear to connect to the battery's existing tool-mating interface. This raises the question of whether the claimed "first interface" is limited to the novel undercarriage structure disclosed in the specification or if it can be construed more broadly to cover the conventional top-mating interface used by the accused products.
V. Key Claim Terms for Construction
- The Term: "a first interface defined on the first side of the housing"
- Context and Importance: The location and nature of this "first interface" appear to be central to the invention and the infringement dispute. The patent specification describes an accessory attachment system on the "lower," "under," or "belly" side of the battery, seemingly separate from the primary interface used to connect to a power tool. The accused products, however, use that primary tool-mating interface. The construction of this term will likely determine whether the accused products can be found to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the plain language of claim 1 does not explicitly limit the "first side" to the bottom of the battery pack and that "interface" should be given its ordinary meaning, covering any system of mechanical and electrical connection.
- Evidence for a Narrower Interpretation: A party could argue that the specification provides a specific definition by context, consistently describing the interface as a novel "undercarriage" or attachment on the side opposite the tool connection. For example, the patent states, "The lower, the under, the beneath, the opposite side directly across from the top side of attachment, the belly, the lower end the male and female battery is a battery..." (’989 Patent, col. 5:62-65). This language may be used to argue that the invention is limited to this specific configuration, distinguishing it from an accessory that uses the standard tool-mating slot.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a specific count for indirect infringement (inducement or contributory). The sole count is for direct infringement under 35 U.S.C. § 271(a). (Compl. ¶9-12).
- Willful Infringement: The complaint does not allege that Defendant had pre-suit knowledge of the ’989 Patent or that its infringement was willful. However, the prayer for relief requests a finding that the case is "exceptional under 35 U.S.C. § 285" and an award of "enhanced damages," which are remedies associated with findings of willful or egregious infringement. (Compl., Prayer for Relief D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural definition: Does the standard top-mating, slide-rail interface on a power tool battery, which the accused products use, meet the claim limitation of a "first interface" with "first and second alignment guides," or is that claim term limited by the specification's disclosure of a distinct "undercarriage" connection system?
- The case may also turn on a question of claim scope: Can the patentee assert its claims, which appear rooted in the concept of adding a new connection point to the "belly" of a battery, against products that simply use the battery's pre-existing tool-connection interface to provide a new function? The answer will likely depend on how the court construes the key interface limitations in light of the patent's specification and figures.